Complainant is Companhia Brasileira de Distribuição of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
Respondent is Chunyuan Jiang of Nan Chang, Jiangxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 1, 2012. On October 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 29, 2012.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on November 7, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant owns several registrations for the COMPREBEM mark, including for example Brazilian Trademark Registration No. 816753105, registered October 4, 1994 in classes 10, 20 and 32. Complainant also owns registrations for several domain names that include the COMPREBEM trademark.
The disputed domain name includes within it the trading name “Comprebem,” used by Complainant for its major Brazilian retail and grocery store chain. From 2003 until February 2012, the disputed domain name was registered in Complainant’s name and was used to promote Complainant’s business and many products bearing Complainant’s COMPREBEM mark.
While unaddressed in the Complaint, the Panel notes that the “comprebem” term is also comprised of two ordinary Portuguese words, “compre” and “bem,” which translate into English as “buy well.”
The disputed domain name was registered in February 14, 2003 and presently routes users to a webpage displaying sponsored link advertising, discussed in detail below.1 5. Parties’ Contentions A. Complainant
Complainant contends that its COMPREBEM mark is famous on the basis of its continuous use since 1954. Complainant provides several Brazilian registrations for the mark, in addition to a judicial ruling dated October 25, 2011, reinstating the validity of Complainant’s Brazilian mark registration No. 816774277 in classes 15 and 40. The record also includes historical references and examples of use of the mark for decades.
Complainant avers that the mark is used broadly for its establishments and as the house brand for “a hundred products.” The record includes examples of the mark being used in promotion of Complainant’s retail stores, consumer products, drug stores, gas stations and private-label credit cards.
Complainant avers that its registration for the disputed domain name was erroneously permitted to lapse in February 2012, after which Respondent acquired the registration. Complainant avers that the disputed domain name is used by Respondent to display sponsored link advertising. While some of the advertisements link to websites of Complainant’s businesses unrelated to the COMPREBEM mark, Complainant avers that others promote large retail variety-store businesses that are in direct competition with Complainant.
In sketchy legal allegations under the policy, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s mark; (2) Respondent has no rights or legitimate interests in use of the disputed domain name; and (3) Respondent registered and is using the disputed domain name without authorization in bad faith by creating consumer confusion for its own commercial gain, with the purpose of attracting Internet traffic and earning pay-per-click revenues.
On the basis of these allegations, Complainant requests transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company indicated that the notification was not deliverable to that address. The Center also notified Respondent by using email and fax addresses provided by the registrar in its verification response to the Center, but these notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
These elements must be established even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). C. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to the COMPREBEM mark, in which Complainant has rights.
Panels usually disregard the generic top-level domain (gTLD) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315. Removing the gTLD suffix, then, the disputed domain name is identical to Complainant’s COMPREBEM mark.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy. D. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a record showing a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Under the above rules, does Respondent have rights or legitimate interests to use the disputed domain name?
First, lacking any Response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization or license to use Complainant’s trademark.
Second, although the Complaint does not address the point, the Panel finds on the basis of the record that there is no indication that Respondent is commonly known by the disputed domain name.
Third, the Complaint does not address the significant questions of whether Respondent is making a bona fide, legitimate noncommercial or fair use of the disputed domain name. To answer these questions, under the circumstances, the Panel must review evidence about the use of Respondent’s website.
The Complaint embeds two screen images, ostensibly captured from the website to which the disputed domain name routes. The Complaint alleges that links on the pages route users to businesses of direct retail competitors of Complainant. Those links appear to have been marked in red boxes on the images embedded in the Complaint. There are no authentication details, dates, or explanations about the boxes or modifications that appear to have been added in transforming the images into a part of the Complaint document.
The Complaint also includes an annex showing slightly different screen images. These screen images are authenticated through a standard evidentiary procedure involving a Brazilian notary. Unlike the images embedded in the Complaint, these images do not appear to show links to Complainant’s retail competitors. The notarial images also appear to have no modifications, added boxes, or markings; however, these images do show pages with several links to third-party Brazilian credit card offerings.
What do these images show about whether there is a bona fide, legitimate noncommercial or fair use of the disputed domain name? Since the images embedded in the Complaint are not authenticated and do not bear any dates or other explanations, the Panel refrains from considering the images embedded in the Complaint. The Panel does consider the notarial proof credible, however, and accepts that proof as reliable evidence.2
As the notarial proof shows, Respondent, through its website, promotes third-party credit cards. Therefore, the Panel finds that Respondent is making a commercial use of the disputed domain name and not a legitimate noncommercial or fair use. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
The notarial proof also shows that Respondent does not through the website promote the products or establishments of Complainant associated with the COMPREBEM marks. Thus, the Panel rules that Respondent is not making a bona fide offering of goods or services in connection with its use of the disputed domain name.
Finally, since the disputed domain name consists of dictionary terms, there is another important consideration that the Panel must review in applying the Policy: the words “compre” (buy) and “bem” (well) could be intended by Respondent to be used in their ordinary or dictionary sense to signal to Internet users that Respondent’s website is promoting “good buys.”3
Did Respondent use the disputed domain name because of its descriptive meaning, supporting a legitimate interest by Respondent? As explained below, the Panel infers that Respondent did not.
UDRP panels have considered acceptable under the Policy the use of dictionary terms in their ordinary sense, even if the domain name in dispute is confusingly similar or identical to a complainant’s trademark. In a previous decision, this Panel summarized the rules applicable to such cases:
“The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark. E.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031.
“However, that domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as a dictionary word or descriptive term. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.”
Johnson & Johnson v. Chad Wright, WebQ, Inc.,WIPO Case No. D2012-0010 (three-member panel).
Having refrained from submitting any response, Respondent has not raised the possibility that it uses the disputed domain name because of its attraction as a descriptive phrase. On review of the overall record, and as explained more fully below in the Panel’s analysis of bad faith under the Policy, the Panel infers that Respondent instead is seeking to attract Internet users through Complainant’s marks.
In sum, the Panel concludes that a prima facie case is established. Filing no response, Respondent has not rebutted that case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint and the failure to correct erroneous or outdated contact details with the registrar. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Was Respondent aware of Complainant’s trademark and product name before Respondent’s registration?
The record does not indicate directly, but the Panel concludes that Respondent was aware, based on these circumstances: (1) Although Complainant’s COMPREBEM mark is also a combination of dictionary terms, the mark was widely used as the name for a Brazilian chain of retail stores and many of Complainant’s products for decades before Respondent’s registration. (2) The advertisements and sponsored links on the website to which the disputed domain name routes predominantly represent Brazilian businesses, suggesting an intention by Respondent to target the Brazilian market. (3) From 2003 until February 2012 when Complainant’s registration of the domain name lapsed, the disputed domain name was used to promote Complainant’s business. The record indicates that Respondent only obtained the registration via back order with the registrar, following the lapse and expiration of the grace period. The need to make a back order should have alerted Respondent that the disputed domain name had previously been used, and registered to Complainant, the party owning the COMPREBEM marks. (4) Complainant also owns numerous other domain names containing the COMPREBEM trademark.
In light of these circumstances, the Panel infers that Respondent registered the disputed domain name intending to trade on the value of Complainant’s trademark. Since the Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark, registration in bad faith is established.
The Panel finds that several of the circumstances listed above also support a finding of use in bad faith. Further, since the disputed domain name is also used to promote sales of third-party credit card products, the disputed domain name is being used for direct competition with Complainant. This is often viewed as evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). Finally, the Panel finds under the circumstances that Respondent’s choice to refrain from submitting a response to these proceedings is additional evidence of use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows, supra.4
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: November 21, 2012
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. The Panel has also viewed archives of the website at “.“
2 The appearance of the screen captures in the notarial proof is also consistent with the appearance on line of the website to which the disputed domain name routes.
3 This is yet another issue significant to the second element of Policy paragraph 4(a) that was omitted from the Complaint. Counsel is reminded that it is the moving party’s responsibility to present its claim within the framework of the UDRP. This is not, as styled in the Complaint, a proceeding directly controlled by Brazilian or international trademark laws.
4 Conceivably, Respondent may not have received notification of these proceedings. If so, it was due to Respondent’s failure to maintain accurate contact information, as required in the registration agreement. That failure by Respondent would constitute further evidence of bad faith. E.g., Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 (citing The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340).
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